Who: Wyke Farms Limited
Where: UK
When: 13 October 2014
Law stated as at: 12 November 2014
What happened:
Somerset cheese manufacturer Wyke Farms last month announced its successful registration of the trade mark FREE CHEESE FRIDAY in the United Kingdom. The mark is registered in class 29, for “cheese and cheese products” and was added to the UK register on 15 August this year. This means that others may not now use this mark in the course of trade without risking infringement proceedings.
People like free cheese (#statingtheobvious)
The phrase is used as part of a weekly promotion on social media that the dairy producer has run over the past 4 years. Twitter and Facebook users in the UK who follow the brand can obtain a chance of winning various cheeses produced by Wyke Farms. The Twitter entry route is to retweet the message put out on the manufacturer’s Twitter feed each Friday featuring the hashtag #FREECHEESEFRIDAY. The promotion has been successful (as you might expect from a promotion giving away free cheese) and has seen solid growth over the past 4 years with the number of entrants doubling annually and reportedly over 25,000 entries a month.
Distinctive cheese
To register a UK trade mark, Wyke Farms would have needed to show that FREE CHEESE FRIDAY was distinctive and capable of graphical representation. The law underpinning this requirement is set out in sections 1(1) and 3(1) of the Trade Marks Act 1994, which also provide that the following (along with some further carve-outs including deception, statutory protections and bad faith registrations) shall not be registered as trade marks:
(a) signs which [are not capable of being represented graphically or distinguishing goods and services of one undertaking from another undertaking];
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services; or
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
However, Section 3(1) goes on to specify that failing the test in (b), (c) or (d) above shall not prevent registration of a trade mark if (much like a piece of unpasteurised cheese left in a warm room) it has acquired a distinctive character as a result of the use made of it prior to the application.
It is of particular interest in this case that, according to reports, the widespread retweeting of the hashtag #FREE CHEESE FRIDAY (presumably in addition to use of the phrase on the Facebook page and on the Wyke Farms website) assisted the manufacturer in demonstrating use/distinctive character and to obtain its registration.
Why this matters:
This registration is being hailed as the first trade mark granted due to the popularity of a social media campaign. If the retweeting of the hashtag was indeed a critical factor in terms of demonstrating use and distinctiveness, it seems likely that other brand-owners may seek to rely on this when acquiring protection for their key words and phrases.
Looking ahead, it will be interesting to see how Wyke Farms uses its protection for FREE CHEESE FRIDAY. For example in the hypothetical case of other cheese manufacturers using the hashtag on Twitter or the phrase on Facebook to try and ride on the coat-tails of the promotion’s success, in addition to the possibility of court action, Wyke would be able to avail itself of both Facebook’s and Twitter’s internal trade mark dispute procedures. These allow rights holders to apply to have allegedly infringing content removed and, in respect of Twitter, the possibility of termination of the infringer’s account.
Whether this registration will spark a rush from other businesses towards registration of phrases used as hashtags for popular social media promotions remains to be seen.
